Ungentlemanly conduct? Jack Wills v The House of Fraser in battle of British bird brands
In Jack Wills Ltd v House of Fraser (Stores) Ltd  EWHC 110, Arnold J has held that House of Fraser’s use of a pigeon logo on clothing products infringes Jack Wills trade mark registration for its Mr Wills logo.
The decision underscores the value of registering logos as trade marks, and provides additional support (if it was needed at all) for the proposition that such signs can and do automatically function as brands in the eyes of consumers.
Robert Guthrie, a partner in KWM’s London office comments that the case “follows a long line of decisions in the UK where products that have taken the look and feel of popular brands have been found to infringe trade marks and/or amount to passing off. The Jiff Lemon case and United Biscuits v Asda, Penguin biscuits v Asda’s Puffin biscuits, being two well-known examples. Brand owners can take comfort that the UK courts take a fairly strong approach to such “look-a-like” products even when, as was the case here, there is no evidence of actual confusion”.
Arnold J’s decision can be accessed includes examples of the respective marks in use.
Jack Wills started up in 1999 as a brand targeted towards affluent university students, seeking to “convey a brand image that combines traditional British heritage with a more American-influenced, casual, irreverent spirit”. It sponsors Oxford and Cambridge rugby, polo and cricket matches, and also uses “Seasonnaires” (good-looking folk selected for “their ability to influence others” who are contracted to wear and promote Jack Wills’ clothing). It has also “benefited” from (unpaid) celebrity endorsement, including through being worn by Harry from One Direction. No comment.
Jack Wills now has over 50 stand-alone UK stores, including 10 in London, and a concession in Selfridges. Turnover rose from £22 million in 2008 to £133 in the year ending 3 February 2013.
Jack Wills’ “Mr Wills” logo was designed in 2007. It takes a number of largely similar forms, but the mark relied on by Jack Wills (the subject of UK and CTM registrations) is shown below, registered in respect of (among other things) clothing, footwear, headgear in class 25.
The pheasant was chosen (somewhat disconcertingly) due to it being “a proud-looking, strutting, bird, which has traditionally been hunted by the landed gentry in Britain”. The top hat, cane and scarf emphasised “Britishness” and the upmarket nature of the brand.
House of Fraser has over 60 department stores across the UK and Ireland, selling a wide range of goods including menswear. The majority of its menswear sales are of third party brands, made through concessions and the store itself, and a smaller percentage (12-13%) are of House of Fraser’s own brands, including Linea.
The Linea brand was said to be well known to regular House of Fraser customers, with the average age of those consumers being 45 years old (male) and 50 years (female). The Pigeon Logo was used on Linea garments from around November 2011 until February 2013.
This use only came to Jack Wills’ attention in October 2012. A letter before action was sent on 24 October 2012 and proceedings were commenced on 12 November 2012.
Arnold J summarized the dispute in the following terms.
“It has become commonplace for clothing companies to adopt logos as part of their branding which are used in various ways, but in particular embroidered or appliquéd on the left breast of shirts, sweaters and similar garments. Well-known examples include the Fred Perry laurel wreath, the Lacoste crocodile and the Polo Ralph Lauren polo player. It is common for such logos to be registered as trade marks. Does the proprietor of such a trade mark have a legal remedy if a competitor adopts a similar, but not identical, logo?”
Was the Pigeon Logo intended to function as a brand?
Ms Hay, House of Fraser’s Executive Director of Menswear and Childrenswear since 2012, denied that the Pigeon Logo had a branding function, albeit that she conceded that it was part of a “portfolio of branding”. Arnold J held in any case that it was manifest from the logo and its manner of use that it was “not intended merely to be decorative, but was intended to have brand significance”, and that is how consumers would have perceived it. Arnold J had earlier in the judgment stated, regretfully, that Ms Hay was not a satisfactory witness and that some of her evidence stretched credulity.
Was the Pigeon Logo copied from Mr Wills?
There was a lack of clarity as regards the specifics around the adoption of House of Fraser’s Pigeon Logo.
Ms Hay was adamant that there had been no copying of the Mr Wills logo. However, there was a stark similarity between a Linea swing ticket featuring the Pigeon Logo (with the words “OUTFITTING THE KINGDOM”, “MODERN GENTRY” and “linea”), and an earlier one that had been used by Jack Wills featuring Mr Wills (with the words “Outfitters to the Gentry”).
While Arnold J was willing to accept that the Pigeon logo was not a deliberate copy of Mr Wills, it appeared that the designer had been “perhaps subconsciously” influenced due to his undoubted awareness of Jack Wills’ branding and the nature of the brief that he received.
Other bird brands in the UK
Reference was made to a number of other “bird” fashion brands in use in the UK, accompanying the brands Lyle & Scott, American Eagle, Emporio Armani, Hollister and Original Penguin. Arnold J considered that there were clear differences between these logos and the Mr Wills logo (also mentioning that none of the other brands were pheasants or pigeons). The other birds were all depicted “face-on as opposed to side-on”, and all (except for Original Penguin) were depicted in flight. Of key importance, none of the other birds is adorned with human accessories like the top hat, scarf and cane of Mr Wills.
Was there a likelihood of confusion?
The main ground of attack for Jack & Wills was article 5(1)(b) of the EU Directive and 9(1)(b) of the CTM Regulation, which is triggered when a party uses (without consent) in the course of trade a sign that is identical or similar to an earlier registered sign, on similar goods, such that there is a likelihood of confusion.
Arnold J referred to the summary of factors from the UK registry in assessing the likelihood of confusion, as approved by Kitchin LJ in Specsavers. Key to this is the requirement that the likelihood of confusion be appreciated globally, taking account of all relevant factors.
The average consumer was considered to be a consumer of men’s clothing, and particularly casual clothing, who would exercise a moderate degree of attention.
Arnold J considered that the Mr Wills logo had a substantial degree of inherent distinctive character. This took into account the anthropomorphic aspect, and in particular the fact that the bird is equipped with accessories associated with an English gentleman. Notwithstanding the lack of market research, survey evidence or trade evidence, Arnold J also took the view – based on the sheer scale of use – that the Mr Wills logo had acquired additional distinctive character through use. It is an element that purchasers would recognise as being a Jack Wills brand.
Comparing the marks, they had a reasonable degree of visual similarity and a high degree of conceptual similarity. It was particularly important that each mark was in the form of the silhouette of a bird with accoutrements suggestive of an English gentleman.
Even factoring in the context of the use, including House of Fraser’s argument that Linea was an established brand in its own right, and that House of Fraser does not sell Jack Wills goods, Arnold J considered that there was a likelihood of confusion. Echoing his recent decision in Aveda Corporation v Dabur India Ltd  EWHC 589 (Ch) (18 March 2013)), Arnold J took into account that the human eye has a tendency to see what it expects to see.
The fact that there were no examples of actual confusion was not fatal to this ground. There was a lack of clarity around the amount of garments House of Fraser had sold under the Pigeon logo, and it was not clear that either party had made any serious attempt to find evidence of confusion.
Jack Wills also relied on article 5(2) of the EU Directive and 9(1)(c) of the CTM Regulation, which provide for infringement where the earlier mark has a reputation in the EU and where the use of an identical/similar mark is without due cause and takes unfair advantage of, or detrimental to, the distinctive character or repute of the earlier mark. In the store environment, some customers would see the Pigeon logo on its own, only to notice the Linea label or swing ticket later, thus giving rise to a risk of initial interest confusion. There was also the risk of post-sale confusion, when the garment is being worn and seen by others.
Arnold J considered that Jack Wills had a sufficient reputation in its Mr Wills logo as at November 2011, and that there was a sufficient link between the Pigeon logo and Mr Wills. Taking into account his finding that House of Fraser intended the Pigeon logo to have brand significance, and the clear intention to use the Pigeon logo in order to make the garments more attractive to consumers, Arnold J considered that this was “a classic case of a retailer seeking to enhance the attraction of its own brand goods by adopting an aspect of the get-up of prestigious branded goods, in this case an embroidered logo of the kind used by Fred Perry, Lacoste, Polo Ralph Lauren and others. Thus House of Fraser was seeking to influence the economic behaviour of consumers of Linea menswear. I see no reason to think it will not have succeeded in that endeavour”.
Arnold J went on to find that the effect of the Pigeon logo “will have been to cause a subtle but insidious transfer of image” from Mr Wills to the Pigeon logo in the minds of some consumers, regardless of House of Fraser’s intentions.
House of Fraser had no justification for this conduct, and it was held that the use of the Pigeon logo took unfair advantage of Jack Wills’ reputation in Mr Wills.
What would have happened in Australia and New Zealand
Given the similarities between the respective marks, it is difficult to conceive a different result being reached in Australia or New Zealand on the threshold point of deceptive similarity. That is so notwithstanding that elements of the local tests could be seen to differ from the summary factors listed by Kitchin LJ in Specsavers.
While the decision is likely to have been the same in any case, it is worth noting the influence of the reputation of an earlier right in infringement proceedings in the UK. That is, where the earlier right benefits from an enhanced distinctive character (including through use and promotion), then this is a relevant factor in increasing the likelihood of confusion. This is opposite to the commonly taken approach in Australia at least, through which a greater reputation on the part of one of the marks being compared has been seen as serving to reduce the risk of confusion.